A reader who practises in Italy has written to PatLit with the following question:
"Our client owns a European patent, on which basis he sued another company for infringement, counterfeiting and unfair competition since that company manufactured and sold an invention carrying features deemed equivalent to the claims contained in our client's patent. Our client first filed an application to the court, asking for the seizure of the counterfeiter's invention as a urgent protective order, so as not to let it be further traded, and alleging pecuniary loss.
After the seizure was ordered, ordinary civil proceedings were initiated with our client filing a claim for counterfeiting and unfair competition plus damages. The opponent/respondent (counterfeiter) inter alia challenged the validity of the patent. Accordingly an assessment by an expert witness was ordered by the judge. This assessment eventually stated that the patent was not sufficiently described to enable the person skilled of the art to use it. In consequence of this we risk cancellation of the patent by the Italian judge even though the EPO granted it.
Here's my question: under European IP law and practice, is it somehow possible to override an expert witness in order to preserve the European patent's validity as stated by the EPO when the patent was granted?"
I don't know very much about the legal system in Italy, but I had assumed that, in Italy as elsewhere in the countries covered by the European Patent Convention, the European patent once granted is no more than a bunch of independent national patents which may be upheld or annulled by patents courts in each jurisdiction on the basis of the evidence placed before them. I think that the real question is a tactical one: what is the best approach to take with regard to the validity of a European patent overall, when its validity is challenged in one jurisdiction (in this case, Italy). In any event, thoughts and comments from readers would be appreciated.
